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No two faces are quite the same

An industrial design, which protects the external appearance of a product, may not be the same as a trademark, which designates the origin of goods. Thus there may be a conflict between the registration rights to a design and a trademark.

In 2000 the Office for Harmonisation in the Internal Market (Trade Marks and Designs) registered a figurative Community trademark in favour of Andoni Galdeano del Sel, featuring a seated figure, for clothing, footwear, headgear and other products. Five years later, OHIM registered a Community design featuring a similar figure, in favour of the Spanish company José Manuel Baena Grupo, SA, for ornamentation of T-shirts, caps, stickers and printed matter, including advertising materials.

Galdeano del Sel trademark Baena design

In 2008 the holders of the Galdeano del Sel trademark applied to OHIM to invalidate the registration of the Baena design. They argued that it did not qualify for protection because it was not new and lacked individual character, and also used the previously registered trademark of the seated figure.

The OHIM Cancellation Division invalidated the registration of the Baena design, holding that the design contained the prior trademark. The OHIM Board of Appeal then found that the Cancellation Division had erred in considering that the earlier mark had been used in the contested design. Nevertheless, it found that the design did not have individual character, because it did not produce on the informed user (young people or children who habitually purchase T-shirts, caps and stickers or users of printed material) an overall impression that differed from that produced by the earlier mark. Thus the Board of Appeal confirmed the invalidity of the contested design.

The General Court granted Baena’s application to annul the decision of the Board of Appeal. The court held that a comparison should be made between the overall impression produced by the contested design and the overall impression produced on the informed user by the earlier mark. The court found that that the overall impression produced on the informed user by the two silhouettes at issue was determined to a large extent by the facial expression of each of them. The facial expression of the Galdeano del Sel trademark, combined with the position of the body leaning forwards, which gives the impression of a degree of irritation, would induce the informed user to identify the mark as an angry character. By contrast, the overall impression created by the Baena design was not characterised by the display of any feeling on the basis of the facial expression or the position of the body.

Thus the court found that in the overall impression, “the difference in the facial expression will be clear to young people buying T-shirts and caps, and will be all the more important for children using stickers to personalise items, who will be more likely to pay particular attention to the feelings expressed by each character appearing on a sticker.”

The holders of the trademark appealed to the European Court of Justice (Sixth Chamber) to set aside the judgment of the General Court. The court denied the appeal, holding that the General Court did not err by assessing the overall impression produced by the earlier mark and the contested design without assuming that an informed user would make a direct comparison of the designs. The court could properly base its reasoning on the informed user’s imperfect recollection of the overall impression produced by the two silhouettes.

The ruling upholding the distinction between the impressions created by the trademark and the design in this case is controversial. It is hard not to notice the similarity between the two figures, presented in a similar comic-book style. The decisive importance ascribed to the facial expressions of the two figures is surprising. The reliance on an informed user’s imperfect recollection of the overall impression of the two figures also appears inconsistent with the existing line of precedent.

It should be pointed out that the issue of the use of an earlier trademark in an industrial design was not the subject of the review by the General Court or the ECJ. This objection was not raised by the holders of the earlier mark. Thus the holding in this case cannot be treated as a general rule prohibiting a party from raising the objection of confusion between a trademark and a design.